U.S. Court of Appeals for the Federal Circuit in Washington, D.C. Photo: Mike Scarcella/ALM.

Seirus Innovative Accessories Inc.'s logo just became worth $3 million.

It's not because of any inherent marketing value. It's because the company's practice of inserting the logo box into its wavy design for heat reflective material was enough to defeat summary judgment for infringement of a competitor's patented design.

Judge Alan Lourie of the U.S. Court of Appeals for the Federal Circuit acknowledged Wednesday that the court has previously held that an infringer can't automatically defeat design patent liability simply by adding a label to a copied design. But that precedent "does not prohibit the fact finder from considering an ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one," the judge wrote in Columbia Sportswear v. Seirus Innovative Accessories.

The upshot is that Seirus will get a new trial before U.S. District Judge Marco Hernandez of the District of Oregon, handing a win to its Fish & Richardson counsel.

Columbia patented a design for its Omni-Heat linings that can insulate jackets, boots, gloves, hats, pants, sleeping bags and tents. Seirus markets a competing "HeatWave" product that features a similar wavy pattern, though Seirus argues that its waves vary in spacing and size, and are interrupted by repeated appearances of the Seirus logo.

Hernandez ruled as a matter of law that Seirus' design infringes. The differences in the designs are "so minor as to be nearly imperceptible" to an ordinary observer, the judge wrote. And it's "well-settled that a defendant cannot avoid infringement by merely affixing its logo to an otherwise infringing design," he added, citing the Federal Circuit's L.A. Gear v. Thom McAn Shoe.

Lourie and Federal Circuit Judges Kimberly Moore and Kara Stoll disagreed. "The district court's piecemeal approach, considering only if design elements independently affect the overall visual impression that the designs are similar, is at odds with our case law requiring the fact-finder to analyze the design as a whole," Lourie wrote. On remand, a jury should resolve the disputed facts about the design, he added.

The court sidestepped a hot-button issue in the case: whether Columbia can recover profits on all of the infringing HeatWave products, or whether the infringing "article of manufacture" is only the fabric that bears the design. District courts are still working out how to determine the article of manufacture following the Supreme Court's 2016 ruling in Samsung v. Apple.

The Federal Circuit further held that Hernandez was within his discretion to move the trial to the Southern District of California in the wake of the Supreme Court's TC Heartland v. Kraft Foods Group Brands ruling on patent venue.

San Diego Fish & Richardson partner Seth Sproul argued the appeal for Seirus. Columbia was represented by Schwabe, Williamson & Wyatt in Portland, Oregon.